On Tuesday, Google LLC filed a notice of opposition before the Trademark Trial and Appeal Board against applicant PixelRo Co., Ltd.’s application for the PIXELRO mark claiming that the registration of the applicant’s mark is likely to cause consumer confusion with Google’s PIXEL marks.
According to the filing, Google’s PIXEL mark was applied for in February 2013 with a priority date in October 2012 based on its first date of use in commerce on December 8, 2015. This other PIXEL mark covers “Computers; laptop computers; tablet computers; mobile phones” in International Class 9. Google stated that another PIXEL mark was applied for in October 2017 based on its first date of commercial use on December 8, 2015. This mark covers “Cases specifically adapted for and used for charging earbuds, earphones, and headphones; cushions, pads, cases, covers and protective covers specially adapted for mobile phones, smartphones, and electronic devices; computer peripherals…” in International Class 9. Collectively, these are the PIXEL marks.
Google said the applicant’s PIXELRO mark, which was applied for on February 28, 2020, in International Class 9 covers “Clear protective covers specially adapted for personal electronic devices, namely, cell phones and smart phones; Protective cases for cell phones; Protective cases for smartphones; Protective films adapted for computer screens…” Google asserted that the applicant knew of Google’s PIXEL marks before filing for the PIXELRO mark and purportedly “intended to trade off of Google’s well-known PIXEL Marks and reputation.”
Moreover, Google contended that the “marks are similar as to appearance, sounds, and meaning” because the applicant’s PIXELRO mark “utilizes the entire PIXEL formative of Google’s PIXEL Marks, resulting in similar appearance and sound.” Additionally, Google claimed that the applicant “uses the PIXELRO Mark with the ‘PIXEL’ and ‘Ro’ elements separated, thereby increasing the potential for a likelihood of confusion between the PIXELRO Mark and Google’s PIXEL Marks.” Furthermore, Google proffered that this is likely to cause consumer confusion, mistake, and deception because Google offers products under PIXEL-related marks that cover the same or similar items that the applicant’s PIXELRO mark has sought to cover, namely, cases and protective covers for various electronic devices.
Therefore, Google averred that consumers are likely to believe that there is a connection, affiliation or that both parties’ products “emanate from the same source.” Google also noted that both parties’ goods and services are offered through the same or similar channels of trade and the same or similar classes of consumers.
Google has cited the likelihood of confusion as its claim for relief, alleging that it will be harmed if the applicant’s mark is registered. Google has sought for the opposition to be sustained and for the registration of the PIXELRO mark to be refused.
Google is represented by Arnold & Porter Kaye Scholer LLP.
